Roadmap to a successful trademark strategy
Every business spends loads of resources educating customers on the value of its products, building brand loyalty, addressing customer issues, and distinguishing itself from its competitors. The point of all this effort is to build up goodwill and customer loyalty, which invariably lead to a long-lasting and profitable business. No matter the particular industry, that hard-earned goodwill and customer loyalty has a lot of value. Your trademark, by definition, is an embodiment of your goodwill. Therefore, a distinctive, properly protected, and well-managed trademark is often a company’s most valuable asset (according to Forbes, Google’s trademark is worth $44.3 billion dollars). Your trademark strategy always has a direct impact on your bottom line, and in many cases, the strength of your trademark strategy can lead your company down the road to success or failure.
The good news is that the fact that your small business does not have the resources of Google doesn’t prevent you from using sound, big-company strategies to develop your trademarks. Here is a roadmap to developing and maintaining a trademark that will add to your company’s value.
1. Develop your brand.
The first step to developing a valuable trademark is to properly develop your brand. A brand is what a company, product, or service is in the minds of consumers. A brand is not what a business does, but who it is and why it exists. Solid branding articulates this message and distinguishes a company from its competitors. Branding is a rich subject that calls upon a wide range of other complex fields such as art and psychology. Therefore, I highly recommend taking the Introduction to Marketing course offered by the prestigious Wharton School of the University of Pennsylvania, which is available free online on the Coursera website.
2. Develop a list of distinctive trademarks that evoke your brand.
Once you develop your brand, you need to develop a list of distinctive trademarks that evoke your brand without describing your actual product or service. It’s a bit counter-intuitive, but the most valuable trademarks are those that have the least to do with the product or service being sold. For instance, Apple is a great trademark for computers, but a terrible (actually, unallowable) trademark for apples. To avoid having to redo this later, it’s a good idea to go ahead and do some thorough research on selecting trademarks. A good place to start is the International Trademark Association’s trademark guide for businesses. If you have the money, you may want to go ahead and hire an experienced trademark lawyer to give you some general guidance and vet some of your proposed trademarks.
3. Evaluate the availability of the potential trademarks.
Once you have a list of potential trademarks, you need to determine which of these trademarks is available for you to use. If you followed steps 1 and 2 above and branded to distinguish yourself from competitors and picked a distinctive trademark, the chance that one of your potential trademarks is available should be much higher. You need to check Google, domain name registrars, social media, and the USPTO database for trademarks that sound, look, or mean something similar. Err on the side of rejecting potential trademarks here. If you think something is even remotely close, it’s best to fix it now instead of in court later. Here’s a money saving tip: Only ask your lawyer to perform a comprehensive search on your favorite remaining trademark and only after you have exhausted your own searching ability and eliminated as many trademarks as possible.
4. Protect the selected trademarks by registering in key markets.
The most important step in your trademark strategy is securing nationwide trademark protection by filing a trademark application with the USPTO. This can (but shouldn’t) be done for free at the USPTO. Experienced trademark lawyers charge a small-ish fee (relative to other legal services) to assist you with this process, and can save you a ton of headaches. Finally, while many small businesses are not interested in expanding outside of the United States, you should at least consider whether filing trademark applications in foreign countries makes sense for where your business is heading.
5. Use and maintain your trademarks properly.
In addition to the periodic maintenance fees required for federal trademark registrations, it’s important to use your trademark properly. “Aspirin” and “escalator” were once trademarks that were lost due to improper use. Always use your trademark as an adjective (may I have a Kleenex brand tissue, please?), mark it with “TM” prior to registration and ® after registration, and never agree to allow someone to use your trademark to sell goods or services without a written license agreement in place. It is also a good practice to routinely search for competitors using or attempting to register confusingly similar marks.
6. Implement an intentional marketing and licensing strategy to add value to your trademarks and extract income.
Speaking of licensing agreements, there is a real opportunity to monetize your trademark or add value to your brand by licensing or co-branding. Just make sure that your licensing and marketing strategies add value to your trademark and do not harm your brand. You can sell your trademark or use it as collateral.
Branding and selecting a trademark that reflects your brand may very well be the most important thing you do before launching your new business or product. Even if you do not have the resources of Apple or Google, you can still follow a sound trademark strategy. You will have to do some heavy lifting, but you will be protecting your investment in marketing, distinguishing your company from your competitors, and developing a valuable asset and potential revenue stream.